Recently issued patent number 7,651,688 is not too remarkable. Its three claims cover an “antibody composition” with a particular arrangement of “sugar chains.” The oddity is that the first 10-pages of the patent document are filled with a listing of over 900 references submitted by the applicant in a series of six information disclosure statements. (The examiner included an additional nine references based on her search of the art).
The most common type of reference submitted in this case were documents from the file-histories of other US patent applications owned by the same entity (Kyowa Hakko Kirin Pharma, Inc.). Many of the submitted references are actually from the file-histories of related-cases being examined by the same examiner. See table below:
881. Non-Final OA issued Oct. 17, 2007 in U.S. Appl. No. 10/581,413. |
The result here is that the file history includes 13,689 pages of non-patent or foreign prior art. Most of those documents were submitted after the applicant had already received a notice of allowance.
Based on my cursory reading of the file history, I do not see that the prosecuting firm (Sughrue) did anything improper or wrong in this case. To the contrary, based on recent inequitable conduct cases, the patentee is clearly hoping to avoid charges of inequitable conduct based on ‘hiding’ references. Of course, the applicant did not indicate which (or which parts) of the 900+ references are most relevant and everyone is clear that the examiner is not going to read all of the references. As one practitioner wrote to me: “The balance is way off between useful information in an IDS and covering-our-asses in regards to inequitable conduct. Something needs to give.”
I contacted Ken Burchfiel of Sughrue. He provided the following on-point commentary:
Burchfiel: I can’t comment on U.S. Patent 7,651,688, except to commend its excellence, and instead offer more general observations on the infectious doctrine of inequitable conduct in a time of “absolute plague” 22 years after Kingsdown. In view of the Federal Circuit’s decisions in Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed. Cir. 2003) and McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897 (Fed. Cir. 2007), it is prudent to provide an examiner with citations to office actions in copending applications. Until the court or Congress acts to limit the ever-expanding scope of the meandering duty of disclosure, which now encompasses information that may be of marginal significance, reasonable practitioners have little choice but to follow the mandate of the Federal Circuit and identify Office Actions in other applications that could later be found to be material. It may also be prudent to identify relevant foreign applications and office actions in an IDS, in view of Therasense, Inc. v. Becton, Dickinson & Co., No. 2008-1511 (Fed. Cir., Jan. 25, 2010). Although the prosecution history of a foreign application cannot be used to construe patent claims, it may now render them unenforceable. The extent of disclosure required in a given case is, of course, a judgment call that depends on many factors, including the indeterminate “reasonable examiner” standard applied by the Federal Circuit. The question is not whether information cited in an IDS is helpful to the actual examiner, but rather whether it may later be deemed material to a “reasonable” examiner by a court. While an actual examiner is required to follow the rules of practice, including the 1992 amendments to Rule 56 limiting the scope of “material” information, a “reasonable” examiner is not similarly bound under Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309 (Fed. Cir. 2006). It is not possible, as a practical matter, to determine the scope of information that may be later be deemed material to an unreasonable “reasonable” examiner (i.e., one who, unlike actual examiners, is not fettered by the rules of practice). As the Federal Circuit again emphasized in Therasense, “if this could be regarded as a close case, which it is not, we have repeatedly emphasized that the duty of disclosure requires that the material in question be submitted to the examiner rather than withheld by the applicant. See LNP Eng’g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d 1347, 1361 (Fed. Cir. 2001) (“[W]hen a question of materiality is close, a patent applicant should err on the side of disclosure.”); LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 1076 (Fed. Cir. 1992) (“[A close case] makes it all the more necessary that the [reference] should [be] disclosed to the examiner. Close cases should be resolved by disclosure, not unilaterally by the applicant.”).” Whether or not this be divinest sense, it is nonetheless Therasense. A patent solicitor’s life has never been an easy one. |
Notes:
-
Claim 1 reads as follows: An antibody composition comprising antibody molecules, wherein 100% of the antibody molecules comprising a Fc region comprising complex N-glycoside-linked sugar chains bound to the Fc region through N-acetylglucosamines of the reducing terminal of the sugar chains do not contain sugar chains with a fucose bound to the N-acetylglucosamines, wherein said antibody molecules bind to CD52.
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“OK, fine. 5500761. Seriously, dude, how many of this examiner’s cases did you have to read before you stumbled on this one?”
I cannot speak to any particular examiner, patent, issues regarding matters before the office, or readings of patents in particular. However, in a hypothetical search that I may have hypothetically performed at some point in a hypothetical universe removed from our own there may have been a first hypothetical claim of a first hypothetical patent I came across. That may be what made a hypothetical situation so hypothetically extraordinarily HILARIOUS! Hypothetically speaking of course.
In any event, I might be prohibited from commenting on any matters that are or perhaps even were before the office but that prohibition doesn’t prohibit others from doing the same.
NWPA do you still require me to rewrite the claim or are you all set to go?
“Besides, I’ve never seen that particular patent before. Close, but no cigar.”
OK, fine. 5500761. Seriously, dude, how many of this examiner’s cases did you have to read before you stumbled on this one?
Tags On, Tags Off.
Tags On, Tags Off.
Wax on, Wax off.
The preceding has been a pubic service announcement courtesy of the Outertoob Limits.
attempt 3
attempt 2
kill the bold, attempt 1
“patent 5589974”
I have no issue with a patent or patent app nor do I present a substantive question about any of them either.
Besides, I’ve never seen that particular patent before. Close, but no cigar.
If you’d like to find what patent the hypo was based upon, you should look for one that actually has “where” in place of “wherein”.
“Post a hypo without all the errors and I will opine.”
Ok. Do it in a bit.
You write:
“As MaxDrei gets told over and over again, you can’t just apply individual foreign patent office practices to the USPTO, no matter how well they work in their home countries. You have to adapt the whole system around the change you propose”
which is funny, because it’s me, telling you, that you can’t just plug FtF into an otherwise unchanged edifice of US patent law. That way lies a real Trainwreck.
Best to stay as you are, or start completely afresh from the ground up, like Europe did in 1977. I know, I know, that’s simply not possible in the USA. So, stay as you are.
EPO-PSA is a special form of TSM. I think it could be used with success, in the USPTO. But not by Examiners untrained in it, who think they understand it but don’t, and think they are using it but aren’t. And not by attorneys lacking any training in it, who think they’ve got it, but haven’t.
When it comes to stuff like the Duty of Candor, that too doesn’t translate, between a common law and a civil law jurisdiction. So, when it comes to evidence and equity, nothing that goes on in a civil law Patent Office like the EPO is translatable into the EPO.
BTW, look at the EPC Rules. They give you just one shot at amendment after the FAOM issues. Any amendment after that gets entered only after the Examining Division gives its consent (which is of course never unreasonably withheld).
“… plus I said “possible” – deficient reading skills make me suspicious …”
As did I. Whose reading skills are deficient?
Incidentally, my disappointment stems from your weaving and bobbing in response to 6’s question. I left out an intermediate sentence or two – deficient writing skills.
Or at the very least, your negative view of the patent bar in general is a bit surprising.
Really? Do we read the same comment threads?
nice, I’ve broken the internet.
and I did include the closing “b” tag
While my heart weeps, Gad, and life is tough, I’ll survive. (it’s not the construction, but rather the commenting on patentability angle – plus I said “possible” – deficient reading skills make me suspicious)
A bit more of the red herring IANAE:
“You can’t just sit back and tell the PTO that it’s responsible for allowing your application, until you’ve done your job on behalf of your client.”
The primary job is writing the application. After that is done you can just sit back (that is, until the Office finally gets around to responding, then you get to get back into action).
No one said that there wasn’t work to do – just like no one said that there should be an immediate response.
However, – the phrase “demonstrate entitlement” is hardly synonymous with “write an application”. Choosing such loaded words is yet another indicator that you are not an advocate. Or at the very least, your negative view of the patent bar in general is a bit surprising.
“As MaxDrei gets told over and over again, you can’t just apply individual foreign patent office practices to the USPTO, no matter how well they work in their home countries. You have to adapt the whole system around the change you propose.”
Yes, but EPO-PSA has no hindsight bias in it.
The Duty of Candor creates all kinds of problems, and other countries seem to have no problem doing without it.
The patent and legal systems in those “other” countries are different from ours in numerous ways that are not generally considered “patent-friendly”. I wonder if that has anything do with their “seeming to have no problem doing without it”?
The Duty of Candor creates all kinds of problems, and other countries seem to have no problem doing without it. I suggest we do the same.
I agree, but it’s part of a deeper issue.
The USPTO conducts its business on the premise (whether you agree or not) that the applicant should be drafting and filing only allowable patents. That’s why you only get one non-final action. If you amend and get rejected again, the rejection is made final because you should have submitted those amended claims in the first place instead of the first set that the examiner properly rejected. You had your chance at examination, and if you want the examiner to look at the case again, you have to pay again. Most foreign patent offices will give you as many non-final rejections as you want, and as many chances to place your application in condition for allowance.
The disclosure requirement is part and parcel of that culture. The applicant is expected to say to the PTO “here is all the art I’m aware of, and I’ve drafted my claims to be valid over it”. Even the whole “inventor-as-applicant” nonsense is part of the intimate connection between the inventor and his preciousss. In exchange, the patentee gets a higher evidentiary standard to invalidate his patent than in other countries (of which I’m not really a fan). Of course it doesn’t turn out that way in practice, but that’s the philosophy behind it.
As MaxDrei gets told over and over again, you can’t just apply individual foreign patent office practices to the USPTO, no matter how well they work in their home countries. You have to adapt the whole system around the change you propose.
**The applicant has to show that he has invented something, and he has to claim it in such a way that it satisfies the “unless”.**
No, the burden is on the Examiner to show that the claims do not satisfy the “unless.” The burden on the applciant to show that he or she has invented something is just the written description/enablement requirement.
Separate and above from that, the Applicant has a Duty of Candor that requires the Applicant to submit any prior art they are aware of that is material to patentability, unless it is cumulative with other art already of record.
But there is nothing requiring the Applicant to determine whether it is cumulative, or preventing the Applicant from submitting art that is cumulative.
Maybe the law will change to punish Applicants for submitting cumulative art. But that will crate a “catch 22” situation for Applicants.
The Duty of Candor creates all kinds of problems, and other countries seem to have no problem doing without it. I suggest we do the same.
“Second, don’t you find it a bit telling that you supply an actual patent number when 6’s “hypo” did not, hmmm? (that’s a possible violation of examiner ethics mind you).”
What’s a possible violation of examiner ethics, constructing a “hypo” based on a claim in an issued patent? Or my googling the functional language that 6 supplied, to determine the source?
I’m disappointed in you.
They are entitled to a patent “unless” – if you were truly pro-patent and pro-applicant you would know this.
I do know that. I’ve mentioned it a few times in recent weeks. It doesn’t change the fact that an applicant has to demonstrate his entitlement to a patent before he can get one.
Have you checked who is entitled to a patent “unless”? It’s not everyone. It’s “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter [etc.]”. The applicant has to show that he has invented something, and he has to claim it in such a way that it satisfies the “unless”. You can’t just sit back and tell the PTO that it’s responsible for allowing your application, until you’ve done your job on behalf of your client.
IANAE,
“I’m very pro-patent and pro-applicant, I just think applicants should establish their entitlement to a patent before they get one.”
They are entitled to a patent “unless” – if you were truly pro-patent and pro-applicant you would know this.
“Maybe that’s my problem. I should take the position that any document submitted to the PTO must immediately result in the grant of letters patent.”
Immediately is such a red herring – we all know that examination takes time and there is no one clamoring for an immediate result. I will also repeat my standing in that ANY rubber stamping is not appropriate. The stamping of accept-accept-accept is just as wrong as reject-reject-reject (something to keep in mind as Malcolm and his ilk post their views – funny how Malcolm never seems to understand such statements – they must be too vague).
Gad(fly),
Your subtleness is just not subtle enough.
First, 6 would have to actually have a substantive question. Not a likely occurrence as the claim he wrote exactly as he wanted to contained so many errors.
Second, don’t you find it a bit telling that you supply an actual patent number when 6’s “hypo” did not, hmmm? (that’s a possible violation of examiner ethics mind you).
As to comments on the 6 hypo – I have already commented enough – see Jan 30 at 9:37 AM and the note to Ned at 1:23 PM and the additional comment at Jan 31 at 3:18 AM
“Feel free to ignore actual questions of merit, change the topic or ask “What the Sam Hill are you talking about?”.”
Noise, I enjoyed your latest barrage of “skirt and track shoe” and “shields of persistent ignorance” argumentation. But, why won’t you answer 6’s substantive question about the functional limitation in patent 5589974? Don’t let me down…
6, don’t pull your cork.
Post a hypo without all the errors and I will opine.
or take an extremely bullish pro-patent pro-applicant view on every subject.
I’m very pro-patent and pro-applicant, I just think applicants should establish their entitlement to a patent before they get one.
Maybe that’s my problem. I should take the position that any document submitted to the PTO must immediately result in the grant of letters patent.
Noise I see you seem to think that I’m boss12 again. Just because someone claims to be me doesn’t mean you should believe them. If I used such a fp I would have posted it far upthread. Personally I don’t make my own FP’s. I either write everything freestyle in a section or use an office FP.
Don’t forget Malcolm,
Joining the club (either the skirt and track shoe club, or the shields of persistent ignorance club) allows you to ignore calls for anything of substance. Feel free to ignore actual questions of merit, change the topic or ask “What the Sam Hill are you talking about?”.
As to rope and straw, those sub sections of the club are filled. However, obvious sockpuppetry is open to all members, as long as you keep it “rare” (wink wink).
MM: “typically accompanied by a swarm of boring sockpuppets/cheerleaders”
HAH! Don’t flout your ignorance so openly. EVERYONE know that we sockpuppets come in pairs, not swarms.
“6: Give it up. You are so out gunned by NAL it isn’t even close. You appear to be a plastic children’s boat next to a destroyer.”
I think you got that reversed son.
Maybe you’d like to address how this language is “functionallol” NWPA since NAL obviously has no clue as to if it is or isn’t or what makes it so or not.
And please, go ahead, tell us the difference between a method step limitation and a functional limitation. You can even cheat off of broje’s Chisum if you like.
And NWPA, come on man, take a guess as to whom has seen an analogous situation to this one before? Come on, take a guess. I’ll give you a hint if you need one.
NWPA IANAE: You can’t be an attorney, or you wouldn’t be so sensitive.
Unless he’s from Texas.
IANAE Malcolm, are there annual dues or anything for membership in this club?
No. Pretty much the only way to become NAL’s BFF is to gratuitously dump on me or 6 or take an extremely bullish pro-patent pro-applicant view on every subject. Otherwise you’ll be “assailed”, typically accompanied by a swarm of boring sockpuppets/cheerleaders. It’s rather amusing and depressing at the same time. If you stick around long enough and refuse to join NAL’s team, the pathetic nature of NAL’s “assailing” will reach its zenith. Eventually you’ll be “assailed” in threads even before you comment on them and characterized as an example of someone who “can’t read” or who has some other mental defect. My advice to you is to read NAL’s comments carefully, especially the multi-paragraph comments. They often contain vague “haughty” declarations that are worthy of follow-up. Have fun! I’ll contact you in the spring about the date and location of the annual club picnic.
“Oooooooooooooohhhhhhhhhhhhhhhh, I’m so ascared!!!!!”
Actually you probably are. As an attorney (who is probably NAL) pointed out for our Director the other day you get angry clients when you get non-responsives. Needless to say, then you get firzored. So yeah, we know why you call the director everyday, hopin’ not to get firedlol.
“Obviously this is false. Is there some context missing, NAL, that you’d like to add?”
Obviuosly, Malcolm is wrong.
Glad to oblige Malcolm with additional context:
The relevant rule related to a request from an examiner is covered generally in 37 CFR 1.105. It should be emphasized that requests are geared to FACTUAL matters and that hypotheses, opinions and fishing expeditions as to what may be considered patentable or any other type of evaluative appraisal of prior art is outside the bounds of what can be required. Asking for an opinion on what is likely to be patentable is not a “fact” which can be requested. It simply is NOT the applicants’ job to examine.
Also note the following direction provided in MPEP 704.11:
“The terms “factual” and “facts” are included in 37 CFR 1.105 to make it clear that it is facts and factual information, that are known to applicant, or readily obtained after reasonable inquiry by applicant, that are sought, and that requirements under 37 CFR 1.105 are NOT REQUESTING OPINIONS that may be held or would be required to be formulated by applicant.” (emphasis added)
Also telling:
Applicant need not, however, derive or independently discover a fact, such as by experimentation, in response to a requirement for information. The purpose of 37 CFR 1.105 is to improve patent quality, and render better decisions, and not to put applicants in jeopardy of meeting their duties of candor and good faith in their replies to a requirement for information.”
My “I don’t know” answer is a paraphrase of 37 CFR § 1.105 (a)(4):
“Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.”
IANAE: You can’t be an attorney, or you wouldn’t be so sensitive.
Whatever he is, one thing is clear: IANAE has never drafted or prosecuted a patent application in his life.
Wow, you guys are really bad at pigeonholing me. It’s almost as if the mere fact that I sometimes disagree with you convinces your hardwired brains that I must be your enemy.
Malcolm, are there annual dues or anything for membership in this club?
IANAE, “when you amend the claims you can refund the time you charged to your client for drafting the application.”
Finding it difficult to stay focused on the point?
Try some CaffeinoExtremo(RTM).
“…the examiner should only be expected to read the art the applicant has already determined to be POTENTIALLY relevant.”
Every US patent and publication ever might be “potentially relevant”, depending on how you choose to understand the term.
If your IDS lists every US patent and application ever published, have you satisfied your duty of disclosure?
NAL if the examiner asks for more information or more particular information, he is welcome to do so but that is not the point here. Keep in mind that a proper answer to such a requeest is a simple “I don’t know”. Such a simple answer does not impact the client’s rights, and the examiner cannot “go final” in the face of such an answer.
Obviously this is false. Is there some context missing, NAL, that you’d like to add?
Whatever he is, one thing is clear: IANAE has never drafted or prosecuted a patent application in his life.
“…the examiner should only be expected to read the art the applicant has already determined to be POTENTIALLY relevant.”
fixed
IANAE: “Mr. Jones, do you know whether Mr. Smith killed Mrs. Smith?”
Mr. Jones: “No.”
IANAE: “Mr. Jones, isn’t it true you are a retired FBI agent and a neighbor of Mr. Smith?”
Mr. Jones: “Yes.”
IANAE: “Well, then, how come you haven’t figured it out yet!!!”
So does we gets all our search fees back?
Sure, and when you amend the claims you can refund the time you charged to your client for drafting the application.
“…the examiner should only be expected to read the art the applicant has already determined to be relevant.”
So does we gets all our search fees back?
IANAE: I have one word for you, “unless,” not “if.”
the point INANE, is whose job it is to read and examine the material.
It’s the applicant’s job to read and examine the material. Of course it’s also the examiner’s job, I don’t deny that, but the examiner should only be expected to read the art the applicant has already determined to be relevant.
Keep in mind that a proper answer to such a requeest is a simple “I don’t know”.
I’m not an examiner, but a simple “I don’t know” wouldn’t satisfy me when “I don’t know, but I’ll find out” is available as an answer. Would you accept “I don’t know” from a witness if you knew he had easy access to the information?
“duty to inform him of relevant art” is met with the IDS. Period.
What if the IDS listed all US patents and published applications? The relevant art is in there somewhere. Would that satisfy the applicant’s duty of disclosure, in your humble opinion?
IANAE is some PTO employee.
Nope. Never have been.
NAL,
IANAE is some PTO employee. He’s not an “examiner” according to his posts.
Of course, to me, anybody who works at the PTO is an examiner.
“Another agent who doesn’t understand how patent prosecution works.”
Another poster who cannot read – the point INANE, is whose job it is to read and examine the material. As huh? points out, if the examiner asks for more information or more particular information, he is welcome to do so but that is not the point here. Keep in mind that a proper answer to such a requeest is a simple “I don’t know”. Such a simple answer does not impact the client’s rights, and the examiner cannot “go final” in the face of such an answer.
“duty to inform him of relevant art” is met with the IDS. Period.
Examination and determination of just how relevant the art is, is the Examiner’s job. For someone who professes not to be an examiner, your viewpoints are way too much in line with one with recent training.
It’s true what they say. 1% of examiners give the rest of them a bad name.
Then I have my secretary call the TC Director’s office every day and ask when my petition is gonna be granted.
When my petition is granted, then I make the examiner my dog. I order him to heel. Sit. Stay. Beg. Roll over. Play dead.
It’s true what they say. 99% of lawyers give the rest of us a bad name.
“The examiner asks you for something. Not even something unreasonable, if you stop to think about it. You choose not to provide it. He asks you for it again, final action. Or worse, he bounces your reply as being non-responsive.
At what point along this chain does your client get his patent? On petition? Appeal? You’d better hope the higher-ups at the PTO agree that it’s ridiculous to require you to have a passing acquaintance with the thousands of pages of documentation that you dumped in the examiner’s lap as part of your duty to inform him of relevant art.”
Another examiner who doesn’t understand how patent prosecution works.
When I get a silly form paragraph like that, I very politely tell the examiner that I’m not required to do whatever it is the examiner is asking for, and request that the requirement be withdrawn.
If it’s not withdrawn, I file a petition.
Then I have my secretary call the TC Director’s office every day and ask when my petition is gonna be granted.
When my petition is granted, then I make the examiner my dog. I order him to heel. Sit. Stay. Beg. Roll over. Play dead.
And he does!
That’s when my client gets the patent.
BTW, I don’t have to “hope” for anything from “the higher-ups at the PTO.” When I petition Boss 12’s form paragraph, what TC Director is going to deny my petition?
Thanks for this laugh: “Or worse, he bounces your reply as being non-responsive.”
Oooooooooooooohhhhhhhhhhhhhhhh, I’m so ascared!!!!!
BWWWWAAAAAHHHHHHAAAAAAAAAAHHHHHHHHHAAAAAAAAAA
There’s nothing like smacking examiners who write their own form paragraphs, or use form paragraphs written by other clueless examiners, upside the head.
Another agent who doesn’t understand how patent prosecution works.
The examiner asks you for something. Not even something unreasonable, if you stop to think about it. You choose not to provide it. He asks you for it again, final action. Or worse, he bounces your reply as being non-responsive.
At what point along this chain does your client get his patent? On petition? Appeal? You’d better hope the higher-ups at the PTO agree that it’s ridiculous to require you to have a passing acquaintance with the thousands of pages of documentation that you dumped in the examiner’s lap as part of your duty to inform him of relevant art.
6 and his attempts at different pseudonyms…
Except that Boss12 admitted long ago that he was 6 (meekly attempting to recant later)- funny how the “brand” of 6 and its famoosity cannot hide under different names (must be the smell).
In addition to made-up form paragraphs we have made up case law. The cited case does not have the directions as listed. 6, you need to learn how to present citations accurately.
The presentation also indicates that an action should be done – but it is not clear who should do that action:
“If a long list is submitted, highlight those documents which have been specifically brought to Applicant’s attention and/or are known to be of most significance”
This smacks of the Examiner’s job. The examiner is to review the submitted list (list already submitted) – bringing known significance TO the applicant’s attention – note that this does not say the applicant does something to bring attention to the Examiner’s attention.
This is indicative of the training that 6 has received – shuffle off as much of the job to the applicant.
A further hallmark signature of 6 regarding rope. From conclusion 17, “including the failure of Stuart’s attorneys to cite the most pertinent prior art, are inequitable conduct which renders the Stuart patent invalid or at least unenforceable.” we see that failure to include contributes to IC (oh, the scourge). Thus, reinforcing the notion that it is better to include when in doubt. Not the message that 6 wanted to put forth.
“Huh, I wonder if Boss 12 is ever been petitioned?”
I’m sure Boss 12 has never been petitioned. Just like I’m sure he’s never lost an appeal.
LOL
Huh, I wonder if Boss 12 is ever been petitioned?
Boss 12, has anyone ever filed a petition to Commissioner in response to your “form paragraph.”
“I have a form paragraph for this exact situation.”
LOL
“Therefore, the references cited in the IDS will not be considered until an underlining of the most relevant references is provided and the references that are not material to the patentability of the claimed invention are deleted from the IDS. Do not highlight the most relevant references, since the IDS will be scanned and the highlighted references will not be visible. Instead, underline the most relevant references listed in the IDS.”
I can’t imagine there’s any registered agent/attorney dum enough to comply with this silliness. At least I hope there isn’t.
“Other examiners reading this post, who also regularly receive massive IDSes, might want to use it”
ROFLMAO
Please do. There’s nothing like smacking examiners who write their own form paragraphs, or use form paragraphs written by other clueless examiners, upside the head.
I have a form paragraph for this exact situation. Other examiners reading this post, who also regularly receive massive IDSes, might want to use it (when appropriate, of course):
Information Disclosure Statement
Concerning Applicant’s duty of disclosure, it is desirable to avoid the submission of long lists of documents if it can be avoided. Clearly irrelevant and marginally pertinent cumulative information should be eliminated. If a long list is submitted, highlight those documents which have been specifically brought to Applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff ’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974).
The information disclosure statement (hereinafter, “IDS”) filed DATE is NUMBER pages long and represents thousands of pages of highly technical disclosure. Thus, the IDS is a “long list.” Moreover, a number of the references do not appear to be material to the patentability of the claimed invention.
Therefore, the references cited in the IDS will not be considered until an underlining of the most relevant references is provided and the references that are not material to the patentability of the claimed invention are deleted from the IDS. Do not highlight the most relevant references, since the IDS will be scanned and the highlighted references will not be visible. Instead, underline the most relevant references listed in the IDS.
>>I think the Commissioner could rectify this >>problem by amending Rule 56 in some fashion >>that would permit the examiner not >>to “directly” consider art filed an IDS >>without some detailed explanation of its >>pertinence, but to permit, as was suggested >>above, the examiner to search the OCR’ed >>versions of the art using a search engine of >>some kind.
This is a problem, but it goes to the Office not having dealt with the real problem of how to get examiners to be experts in a narrow area. And how to help the examiners manage all the references. This IMHO is the key to better prosecution.
I don’t know if I can stand all the civility MM. I might explode and start shouting baboon in my office.
NAL, I had fun dissecting 6’s hypothetical claim. It was a bit off topic, but I didn’t know that until later. 6 may have had a point he was trying to make about the duty of disclosure.
But 6 makes a valid point about wasting the examiner’s time by filing countless pieces of background art as a matter of due caution. I think the Commissioner could rectify this problem by amending Rule 56 in some fashion that would permit the examiner not to “directly” consider art filed an IDS without some detailed explanation of its pertinence, but to permit, as was suggested above, the examiner to search the OCR’ed versions of the art using a search engine of some kind.
“There’s a big difference between having the technical capacity to support a certain number of documents in an online form, encouraging the submission of that number of documents, and acknowledging that it is good practice to submit that number of documents.”
Didn’t see any indication from the post that anticipating 300 citations meant the PTO encouraged or acknowledged that submission of such a number was good practice.
“Besides which, the PTO doesn’t make the law”
They don’t??!!!! Well, somebody ought to tell them that. They’re clearly operating under the delusion that they do.
Apparently, the USPTO anticipates at least 300 combined citations
There’s a big difference between having the technical capacity to support a certain number of documents in an online form, encouraging the submission of that number of documents, and acknowledging that it is good practice to submit that number of documents.
Besides which, the PTO doesn’t make the law, especially not IT staff at the PTO.
Apparently, the USPTO anticipates at least 300 combined citations of U.S. patents and U.S. patent application publications. Here is a recent advisory from the USPTO:
“Advisory (31JAN10): EFS-Web 1.4.4 has been deployed. Starting Jan 31, please use the new version of the EFS-Web Fillable e-IDS Form (PTO/SB/08A)(version 2.1.17) which will allow up to 300 combined citations of U.S. patents and U.S. patent application publications. Attaching an older version of the e-IDS form (version 2.1.16 or earlier) will result in a validation error. See advisory posted on Jan. 20, 2010 for more information.”
“In-house we’re all aware of that other posting. There isn’t much to say about it that hasn’t already been said except that unfortuately D never posted the serial or provided us with what the attorney actually did in that case.”
An update from Dennis sure would be appreciated.
6: Give it up. You are so out gunned by NAL it isn’t even close. You appear to be a plastic children’s boat next to a destroyer.
For the record, I think that was an interesting hypothetical.
Thank you. I think you gave an answer similar to the one I would have given.
And, in general, MM, I think your hypos aren’t terrible, but you need to play fair and answer the questions/hypos that are asked of you.
I think in general I do answer the questions/hypos. I certainly don’t refuse to address softball questions or clarify my own comments on request simply because there’s some outstanding business buried in the 4th page of some ancient comment thread (or even a recent one) where I’ve already contributed plenty.
As for the “abstract” definition you are so keen to hear, at least some of the dictionary definitions that 6 tossed up a while back in one of those old threads seemed to fit the bill for me. When a new thread comes up that’s on topic, I’ll toss something up for you and everyone else to chew on.
“6, What function do you think the word “where” induces? ”
None ya jack as. As noted above it was possibly a failed attempt in the claim on which this hypo was based to say “wherein”.
That was no trap of my crafting, that was a “trap” which I copied. One which someone (guess who NAL) got caught in many years ago. Or, you might say, a “trap” that someone failed to detect many years ago.
In-house we’re all aware of that other posting. There isn’t much to say about it that hasn’t already been said except that unfortuately D never posted the serial or provided us with what the attorney actually did in that case.
“Noise, if you’re going to sockpuppet-cheer yourself on, at least wait more than three minutes to post under the pseudonym so it’s not so obvious.”
LOLOLOLOLOLOL
While I do tend to believe NAL, I’m afraid she may have a lil bit o schizo in her.
Come on, 3 minutes?
compare
“it is recommended that if any information that has been cited by Applicants in the previous disclosure statements is known to be material for patentability as defined by 37 C.F.R. § 1.56”
to
37 CFR § 1.97(h)
The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).
Given this disparity, would the examiner’s request for “known to be material for patentability” be properly treated as a separate request for information (of which a proper response is “I don’t know”)?
I am going to try to refocus this thread. Dennis posted about a similar occurance in an actual case. see the post titled “Responding to Examiner’s Charge of Burying Reference”
link to patentlyo.com
IN that case, only 75 references were cited and the Examiner complained thusly “[T]he cloaking of a clearly relevant reference by inclusion in a long list of citations may not comply with the Applicant’s duty of disclosure. Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948 (S.D. Fla. 1972). . . . accord with dicta from Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995), stating that forcing the Examiner to find “a needle in a haystack” is “probative of bad faith.” Id. [The Molins] case presented a situation where the disclosure was in excess of 700 pages and contained more than fifty references.
Therefore, it is recommended that if any information that has been cited by Applicants in the previous disclosure statements is known to be material for patentability as defined by 37 C.F.R. § 1.56, applicant should present a concise statement as to the relevance of that/those particular documents therein cited.”
Wonder what this Examienr would have done with 900+ refs!!!
” … trail my posts and put up fawning material (with apologies to Gad as no offense is meant).”
None taken!
No coverage intended.
No coverage needed.
My word is good – if I say it wasn’t me, the truth is as good as gold.
Of course, you should recognize my love of the Law and realize that I would not compromise my “brand” by lying.
You have “tipped your hand” 6 – language skills (or lack there of) and the tendency to identify with gender give you away.
I wouldn’t even put it past you in your chicanery to be posting under the Gad pseudonym yourself – although even disingenuously praising me may take more gumption than you could muster.
OK – we are ready for the next side trick here at the Trainwreck.
NAL, or should I say, Miss Direction, it will take more than this rather transparent attempt to cover your tracks to fool the fine readers of Patently O.
Malcolm, er um, Pro-tip.
Perhaps you want to give the reading skills back to 6. As I have noted, I am not Gad.
Or perhaps this the next side show – trail my posts and put up fawning material (with apologies to Gad as no offense is meant). Then accuse me of putting up my own cheering section.
Weak – rather weak.
When your mother told you to kill them with kindness, I do not think this is what she meant.
Well, you waited an hour and 20 minutes before congratulating yourself that time. I guess that’s an improvement.
“(or are you and 6 trading key “skills””
Sounds about right, Noise! You tell ’em!
Trainwreck … that slays me every time.
Malcolm, um, er Pro-tip,
Try reading the response before unduly celebrating. (or are you and 6 trading key “skills”?)
“C’mon jester, make us laugh.”
Poetry – poetry, I tell you!
“Patent Lawyer humor can be excessviely dry, but hey, that’s why we have the Trainwreck)”
Not too dry for me! And I love the “trainwreck” references – nothing could be more apt.
Wow, guess I struck a nerve. Must have been true.
“I simply stated that I drafted it how I wanted it so people wouldn’t mess with the “where” and also turn the method step into functional language.”
Except that you failed miserably. As curious and bread point out, context matters (damm, there’s that problem of context popping up again). Your attempted trap fooled no one (except Ned – sorry Ned – you are too eager to try to give 6 a semblance of credit, so even though you supplied a long list of faults with 6’s strawman, you did not light the match under the most glaring one).
6, What function do you think the word “where” induces?
(Patent attorneys, please forgive the “hidden” jest, I know trick question as function is satisfied twice – function as a connecting word and function as the connection to the means plus “________” statement – Patent Lawyer humor can be excessviely dry, but hey, that’s why we have the Trainwreck)
Malcolm, er, um Pro-tip,
I would not sink to your level in the sockpuppet-arena. I have no desire (nor need) to don mouthpieces so.
My weapons of logic and legal argument are more than plenty for the likes of you. My message is clear. I have no desire to befuddle the readership – in fact I like removing the befuddlement you like to produce. You know, it’s kind of fun exposing your shallow hypocrisy. Your bag of tricks is being depleted. Your straw is going up in smoke. What are you going to try next?
Gad’s enthusiam aside (who doesn’t like a cheering section?), I do not post to hear cheers, much less my own. Let’s be perfectly clear – I am not Gad. I realize that your affinity for multiple posting under various names clouds your judgment – the maxim comes to mind of the liar thinking everyone lies because he does. It is more than a bit telling to hear you pompously state in reply to the question of sockpuppets “Do I do so frequently? No, very rarely.”
Very rarely indeed. That line was as convincing as about any legal holding that 6 pontificates.
And just as worthless.
Let’s check with spammies on that frequency thing, better yet, let’s not, since spammies is just one of many aliases. (clear give away – not counting yourself when you make up more than the number of posts of your two targets combined – D’Oh!).
Mind you, I don’t really care how many brands you wish to use – your dull message is fairly transparent.
Just as that message is typically vapid.
Just as your chutzpah is in your outlandish claims (or are you already thinking of how NOT to put up anything to back up your charge of my dishonesty?).
Just as is your switching subjects when you don’t want to answer a charge.
Just as your “I have no idea what you are talking about” lame line when we had talked about, rather I had chased you with, Printed Matter Doctrine for some nine months.
Just as is your many, many strawman arguments (I hope you didn’t take my criticism of 6’s strawman as an inadvertent compliment – your strawmen may be more subtle, but after all, I was comparing you to 6).
You are center stage Malcolm, the spotlights on you. What is your next trick? C’mon jester, make us laugh.
Noise, if you’re going to sockpuppet-cheer yourself on, at least wait more than three minutes to post under the pseudonym so it’s not so obvious.
And MM as to your hypo above:
I don’t think that an attorney who is not related to the prosecution of my applicaiton sending me a letter saying he/she thinks a large number of referencs may be related to an application I am prosecuting creates a duty for me to figure out if they actually are material or not. I would note it in the file and send a letter to the client explaining my reasoning. I may send a letter back to the attorney telling them that they should follow PTO procedures to disclose any references they feel may be material.
Absent any specifics, I have no duty to figure out how those references may be material to the application that I am prosecuting.
An examiner does have the duty to figure out if the references are material because they are responsible for knowing thier art unit.
The hypothetical would be different if it was one reference and the materiality was apparent.
For the record, I think that was an interesting hypothetical. And, in general, MM, I think your hypos aren’t terrible, but you need to play fair and answer the questions/hypos that are asked of you.
MM: you refuse to answer questions and your way of dodging this has been to ask questions yourself. Why would anyone engage in a debate with you under those conditions. If you expect others to answer your questions, then answer the questions that are put to you or at least state why you think you shouldn’t answer them.
For example, what is the definition of abstract? You have refused to answer this question and yet you use this term to assert that claims should be rejected under the law. I have even referred you to J. Newman’s definition of abstract in the dissent of Bilski as a starting place for a definition of abstract.
NAL is fairly amazing for having the patience and acumen to pin you down. You do not fight fair, which is a shame as you seem like an intelligent person and at times decent. If you are really so unfairly treated as you claim, then why not just answer a few of the questions that have been fairly put to you to get the ball rolling. If you did, it would certainly be impossible for me or anyone else to fairly criticize you. As it is, your tactics are nothing less than what a school yard bully trys to pull.
“I think it’s pretty amusing that, in your zeal to demonstrate how clever you are, you unintentionally created 10 defects that are worse than the one you were focused on. Especially given your admonishment that “I choose my words very carefully … It is exactly the hypo that I wish to craft …”
Perhaps drafting claims is more challenging than you think?”
Perhaps I wanted to chop off some parts of an old old old claim and not spend all day drafting it. The only part I cared about was the end. Fixing the rest of that mess was simply parts I chopped off out of convienence. I simply stated that I drafted it how I wanted it so people wouldn’t mess with the “where” and also turn the method step into functional language.
In any event, come on guys, no guesses whatsoever as to whom took care of this application? Ned? Noise? Surely you have a guess right Noise?
“6, You are still 0/3 – I suppose you don’t want to give it a real try.”
Some of my reasons are perfectly valid, just because you don’t think they are means nothing. The actions taken are not arbitrary, they are based on factual evidence and the actions are taken for a reason. The number of references submitted and ensuring that the references are analysed the best they can be. Whether or not you like this evidence and reasoning is irrelevant to whether or not it is evidence and a reason.
“In his attempt to be clever he merely wrote a functional limititation (poorly at that – ‘natch). Functional limitations are fully legitimate ways of writing claims and do not violate the mixed classes rule.”
A FUNCTIONAL LIMITATION? LOLOLOLOLOLOLOLOL. Keep telling yourself that ya dumas.
Method steps, functional limitations. They’re not the same thing and the former doesn’t magically become the later just because it’s put into an apparatus claim.
And fyi, it wasn’t me that drafted the last part of that nonsensical claim. That part was copied nearly verbatim, all I did was chop some parts out of the claim leaving what I wanted as a hypo claim that was never before the office. Go ahead Noise, take a guess who handled the claim this hypo was based upon at the office.
Let’s see it again:
“1. A modulator comprising:
a conductive substrate;
a conductive membrane;
a flexible support;
a means for supplying bias;
where, under the action of bias the membrane moves to a second position, changing the air gap by approximately one-quarter of a wavelength of a optical signal, as measured in air.”
Let me spell this out for your jack as. When something affirmatively does something in the claim, as opposed to being functional to do it at any point, that is called a “method step”. Functional language isn’t “magic” to insert method steps into your product/apparatus claim.
“the membrane moves to a second position, changing the air gap by approximately one-quarter of a wavelength of a optical signal, as measured in air” <<<<<<<------ see that? That is an affirmative statement of the membrane performing a method step, and it must be done in order for the claim to be met, either for anticipation or infringement. The condition that it must do this action specifically when under bias is immaterial. Now, as to bread's statement about simply interpreting the where as a wherein, well, that might be permissible since the patentee could just file a cert of correction but it still leads to nonsense. Or the examiner could object pre-issue. "1. A modulator comprising: a conductive substrate; a conductive membrane; a flexible support; a means for supplying bias; wherein under the action of bias the membrane moves to a second position, changing the air gap by approximately one-quarter of a wavelength of a optical signal, as measured in air." And you don't get to interpretlol that claim into anything like: "1. A modulator comprising: a conductive substrate; a conductive membrane; a flexible support; a means for supplying bias; wherein under the action of bias the membrane is operable to move to a second position, changing the air gap by approximately one-quarter of a wavelength of a optical signal, as measured in air." Why? Because that changes the substance of the claim and is not an immaterial difference. We saw a case like this one just the other day and the court refused to correct even an obvious grammatical error to fix this same issue because it changed the substance of the claim. Then guess what happened? I think you probably remember what happened. The patentee squeeled all the way home thanks to his lawyers. Now, Noise, go ahead and take a wild guess who's name is on the front of the patent this claim was based off of. I'd really love to know your guess in specific. Oh and hey Noise, do us all a favor and take 10 seconds to explain to us what the difference is between method step and functional limitations in your own little world.
“As for calling anyone a coward, your membership in the skirt and track shoe club makes such a statement the true indicator of hypocrisy.”
Yowzers! Absolutely irrefutable!
Noise – 2, Malcolm – 0.